Trademarks are use-based rights, meaning that a trademark is only entitled to be registered if the mark is actually in use. Likewise, the registrant must continue to use the mark in commerce in order to maintain registration and must take action to renew a trademark registration at various milestones (year 5, 10, 20, 30, etc.). In so doing, trademark owners are required to submit specimen materials showing that the mark is still in use in interstate commerce. For years, these renewals were on a quasi-honor system whereby the registrant needed only submit one specimen showing use in commerce per each registered class. But in order to crack down on trademark squatting, the USPTO has started to issue quality checks at random that require the registrants submit additional specimen to show that all goods and/or services in specified classes are still in use. Now, the Trademark Office has instituted a new fee to combat squatting on abandoned rights. The fee appears to act almost like a fine. If the registrant is required to delete goods, services, or classes in response to one of these quality checks, the USPTO will impose a $250 per class fee. The USPTO recently advised that there are two ways to avoid paying this additional fee: (1) delete the goods, services, or classes when filing the Section 8 or 71 Declaration; or, (2) file a Section 7 Request to Amend a registration prior to submitting a Section 8 or 71 Declaration. If the Section 7 Request to Amend a registration is filed prior to filing a Section 8 or 71 Declaration and the only amendment requested is the deletion of goods, services, and/or classes, the Section 7 Request to Amend is free.
The USPTO has indicated that the goal of imposing a fee for deletions made after a Section 8 or 71 Declaration is filed and before the Declaration is accepted is to heighten the integrity of the trademark register through obtaining more accurate and up to date information from registrants. The USPTO recently issued additional guidance regarding best practices aimed at avoiding this additional fee for certain deletions. These best practices include: (1) creating a checklist for evaluating and confirming the use of the trademark in commerce with registered goods and services; (2) keeping notes regarding the people and records utilized to obtain this information; and, (3) keeping a record of evidence of current use in commerce, such as photos of each good bearing the trademark, printouts or screenshots of supporting webpages with the date and URL, and copies of print advertising or promotional materials. Following these best practices will provide the information necessary to determine whether certain goods, services, or classes should be left off a Section 8 or 71 Declaration, especially if followed when a Section 8 or 71 Declaration deadline is approaching. Following the best practices above is equally helpful when a Section 8 or 71 Declaration deadline is far off, as the Section 7 Request to Amend a registration is free to file when done for the purpose of deleting goods, services, or classes from a registration, which offers protection in the future from having to pay the new $250 filing fee for having to delete certain goods, services, or classes after a Section 8 or 71 Declaration has been filed.